Here's a potentially surprising bit of information for you. Did you know that being the owner of a registered trademark does not automatically entitle you to use the trademark as a domain name?

According to the Intellectual Property Office, "the same trademark can be registered for different goods or services and by different proprietors. Also, someone may have already, and quite legitimately, registered the domain name, perhaps with its use being connected with unregistered goods or services.".

So in short, even if you're the owner of a registered trade mark associated with your business, there's nothing to stop someone registering a domain name that features your trademark. Should that happen you may be able to claim ownership of the domain, however, there is a dispute resolution process to go through, and history tells us that trademark owners aren't always successful...

Mastercard and maestro.co.uk

Maestro (http://www.maestrocard.com/uk/) is Mastercard's international debit card brand. In 2006 it raised a dispute with Nominet over ownership of maestro.co.uk, which had been registered by a domain name dealer called Mark Adams. You'd be forgiven for thinking that as Maestro was a trademark registered to Mastercard, that the domain name dispute would be a formality and Mr Adams would have been forced to transfer ownership of the domain to Mastercard.

When it came to the crunch though, Mastercard lost their claim. While they were able to prove they had rights over the domain through their ownership of the Maestro trademark, they were unable to prove that the registration of maestro.co.uk by Mr Adams was abusive. It was ruled that as "maestro" was a generic name based on an Italian word there had been no deliberate attempt to disrupt Mastercard's business.

Given that you can still find Mastercard's debit card website at http://www.maestrocard.com/uk/, and maestro.co.uk currently has a holding page, we're guessing Mastercard decided not to make the "exceptional offer" that Mr Adams is reported to have been requesting for the domain. You can read more about the case here .

Oasis and oasis.co.uk

In a similar case, Oasis (the clothing store, not to be confused with the band), attempted to gain ownership of oasis.co.uk in 2009. The owner of the domain at the time claimed he was not aware of the Oasis brand at the time he purchased it, and had intended to use the domain to set up a bingo or financial services website. This combined with the fact that oasis is a common English word and not a distinct brand, led to the decision to find in Mr Dale's favour.

Oasis appealed the decision, offering up what they believed was evidence of abusive use of the domain, in the form of links to women's clothing stores from the domain parking page for oasis.co.uk. It turned out that the likely reason the links were there, is that Oasis were running ad targeting the keyword "oasis.co.uk" and as a result had received placement on the oasis.co.uk parking page.

Oasis lost the appeal, these days the Oasis clothing website can still be found at oasis-stores.com. Ownership of oasis.co.uk appears to be in the hands of an Australian company, who are using the domain to host a dating website. More details of the Oasis case can be found here .

Cautionary tales

The two stories above highlight the dangers for trademark owners in not securing their associated domains as soon as they become available. In the autumn of 2014, as the first stage of the launch of the new .wales and .cymru domains, Nominet will start the process of allocating domains to businesses with registered rights. During this stage trademark owners that have registered their trademarks with ICANN's trademark clearing house can start applying for the associated .wales and .cymru domain names.

Secure your Domain

To have the best chance of securing the relevant domain for your registered trademark you should apply for it during the registered rights stage of the .cymru and .wales domain name rollout. To ensure you're first to know when it begins you can sign up for updates here.

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